DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-6, and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Yamasaki et al. (US PGP 2012/0052430 A1), in view of Ikada et al. (US PGP 2020/0409297 A1).
Yamasaki teaches an electrostatic image developing toner including a toner particle that includes a core particle containing a binder resin and a coating layer containing a resin having a crosslinked structure derived from at least one of boric acid and boric acid derivatives ([0008]). The boron crosslinked resin is taught to be a resin having a crosslinked structure resulting from reactions between boric acid or the like and two OH groups in the polymer compound. A crosslinked structure having a -O-B-O- structure is taught to be formed as a result of a dehydration reaction, and the -O-B-O- structure is considered to function as a link that bonds the two OH groups to each other ([0009]).
While the boron crosslinked resin is taught to be contained in the coating layer, Yamasaki teaches that it may also be contained in the core particle ([0016]). In the examples, the binder resin was to include a polyester resin ([0175]-[0194]). In other words, the binder resin comprises a resin capable of forming hydrogen bonds with the boric acid (which reads on the corresponding limitation recited in instant claim 2), wherein the resin capable of forming hydrogen bonds with the boric acid comprises a polyester resin (which reads on the corresponding limitation recited in instant claim 8), the toner core particle may comprise the boric acid and the resin capable of forming hydrogen bonds with the boric acid (which reads on the corresponding limitation recited in instant claim 9), and the shell (coating layer) comprises the resin capable of forming hydrogen bonds with the boric acid (which reads on the corresponding limitation recited in instant claim 10).
Yamasaki appears to be silent to teach or suggest that a peak corresponding to boric acid is detected when the toner particle is subjected to ATR-IR analysis using germanium as an ATR crystal in an ATR method or a presence ratio of a boron element on the surface of the toner particle as measured by X-ray photoelectron spectroscopy, as recited in instant claim 1. Yamasaki also appears to be silent to teach or suggest an area ratio occupied by a release agent in a surface layer region from the surface of the toner particle, as recited in instant claim 4. However, the toner production method taught by Yamasaki is similar enough to the toner production method disclosed in the instant specification that they would be expected to exhibit sufficiently similar physical properties when measured under the claimed conditions.
Specifically, both methods include preparing two separate polyester resin particle dispersions, cyan pigment dispersions, and wax releasing agent dispersions (see [0175]-[0202] of Yamasaki and [0118]-[0123] of the instant specification. In both methods, the two polyester resin particle dispersions, the cyan pigment particle dispersion, and the wax releasing agent particle dispersion are mixed and dispersed followed by an aggregation step to form core particles. A shell containing a boric acid derivative is then formed over the core particles, and washing is performed to produce toner particles (see [0203]-[0214] of Yamasaki and [0124]-[0126] of the instant specification).
According to the instant specification, the claimed presence ratio is controlled by setting the number of parts of the resin particles added in the shell formation step to 0.5 to 4 parts by mass with respect to 100 parts by mass of the toner, and controlling the boron content and conditions of the washing step (see [0031] of the instant specification). Similarly, the claimed area ratio occupied by a release agent in a surface layer region is controlled by adjusting the content of the release agent (see [0028] of the instant specification).
In Yamasaki’s method, the core particles were formed using about 8 parts by mass of releasing agent in terms of solid amount, whereas the core particles of the Applicant’s toner (1) were formed using about 16 parts by mass of releasing agent in terms of solid amount1 (see [0206] of Yamasaki and [0124] of the instant specification). Therefore, Yamasaki’s toner would be expected to necessarily exhibit a release agent area ratio less than that of the Applicant’s toner (1), and thus would be expected to necessarily fall within the corresponding range recited in instant claim 4.
Furthermore, the coating layer was formed by combining 2.4 parts of methyl methacrylate, 1 part glycerin monomethacrylate, and 1 part trimethyl borate ([0209]). Accordingly, the content of the boron crosslinked resin coating layer particles can be calculated as being about 3.64 parts by mass per 100 parts by mass of the toner 2. Therefore, Yamasaki’s toner would be expected to necessarily exhibit a peak corresponding to boric acid when measured under ATR-IR and would also include a presence ratio of a boron element on the surface of the toner within the range recited in instant claim 1.
According to MPEP § 2112(V), "[T]he PTO can require an applicant to prove that
the prior art products do not necessarily or inherently possess the characteristics of his
[or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C.
102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the
burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977) (footnote and citation omitted).
Yamasaki also appears to be silent to teach or suggest that the toner comprises a fatty acid metal salt. However, Yamasaki teaches that an external additive may be added to surfaces of the toner particles as needed ([0109]). Ikada teaches that image smearing can be suppressed by externally adding a metal soap to a toner ([0074]). Examples of suitable metal soaps are taught to include zinc stearate (18-carbon fatty acid, polyvalent metal valence of 2), aluminum stearate (18-carbon fatty acid, polyvalent metal valence of 3), and barium stearate (18-carbon fatty acid, polyvalent metal valence of 2) ([0075]) (which reads on the corresponding limitation recited in instant claim 11 and claim 12).
The external addition of the metal soap is taught to be 0.05 wt.% or more and 0.6 wt% or less. Ikada teaches that too small of an external addition prevents the effects from being exhibited, while an excessive external addition degrades the flowability of the toner and decreases the image density ([0076]) (which reads on the corresponding range recited in instant claim 5).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have used a metal soap as an external additive for Yamasaki’s toner, within the range taught by Ikada, in view of improving flowability and suppressing image defects.
In doing so, the toner of modified Yamasaki would be expected to necessarily exhibit a similar fatty acid metal salt migration amount when subjected to dispersion treatment in a dispersion liquid comprising sucrose and a surfactant, as described in instant claim 6, given the similarities between the toner production methods discussed above, and the types and amounts of fatty acid metal salts used by Ikada and in the instant specification (see Table 1).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yamasaki et al. (US PGP 2012/0052430 A1), in view of in view of Ikada et al. (US PGP 2020/0409297 A1), and further in view of Iga et al. (US PGP 2003/0022086 A1).
The teachings of Yamasaki and Ikada are discussed above and incorporated herein. Yamasaki appears to be silent to teach or suggest the content of boron element on a mass basis of in the toner, as recited in instant claim 3. Iga teaches a toner comprising at least one element selected form the group consisting of boron and phosphorous in a content of 0.1 to 100 ppm (Abstract). When the content of boron is within the above range, prevention of image defects and image quality are improved ([0025]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have adjusted the boron element content of modified Yamasaki’s toner to fall within the range taught by Iga, in view of preventing image defects and improving image quality. In doing so, the skilled artisan could have arrived at a toner having a boron content within the claimed range.
According to MPEP § 2144.05, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached on (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
12/27/2025
1 Yamasaki’s toner (1): 40 parts releasing agent particle dispersion (1)*0.20 = 8 parts
Applicant’s toner (1): 80 parts release agent particle-dispersed solution*0.20 = 16 parts
2(((2.4 parts methyl methacrylate + 1 part glycerin monomethacrylate) = 3.4 parts coating resin particles) / (50 parts polyester resin particle dispersion (1)*0.30 + 160 parts polyester resin particle dispersion (2)*0.30 + 30 parts colorant particle dispersion (1)*0.20 + 40 parts releasing agent particle dispersion (1)*0.20 + 60 additional parts polyester resin particle dispersion (2)*0.20 + 4.4 parts boron crosslinked resin particles) = 0.0364 parts coating resin particles) x 100% = 3.64%